L.F.P. Inc. and LFP IP LLC v. Vista Holdings, Inc
Claim Number: FA0711001111922
Complainant is L.F.P. Inc. and LFP IP LLC (“Complainant”), represented by John
P. Hains, of Lipsitz Green Scime Cambria LLP, 42 Delaware
Avenue, Suite 120, Buffalo, NY 14202.
Respondent is Vista Holdings, Inc (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwhustler.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2007.
On November 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwhustler.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwhustler.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwhustler.com> domain name is confusingly similar to Complainant’s HUSTLER mark.
2. Respondent does not have any rights or legitimate interests in the <wwhustler.com> domain name.
3. Respondent registered and used the <wwhustler.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
L.F.P., Inc. and L.F.P. IP, Inc., collectively, “Complainant,” are companies which provide adult entertainment through various mediums including magazine, video, television and online services. Complainant has registered the HUSTLER mark with the United States Patent and Trademark Office (“USPTO”) on May 20, 1975 (Reg. No. 1,011,001).
Respondent registered the <wwhustler.com> domain name on May 14, 2006. Respondent is using the disputed domain name to offer services that directly compete with Complainant’s online adult entertainment services to consumers for a fee.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the HUSTLER mark
pursuant to Policy ¶ 4(a)(i) through registration of
the mark with USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that Respondent’s <wwhustler.com> domain name is confusingly similar to
Complainant’s HUSTLER mark pursuant to Policy ¶ 4(a)(i)
because Respondent’s disputed domain name fully incorporates the HUSTLER mark
with the addition of two letters presumably to take advantage of common typing
errors by Internet users, as well as the necessary addition of a top-level
domain, in this case the generic top-level domain, “.com.” See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth “w” or the omission of periods or other such
“generic” typos do not change respondent’s infringement on a core trademark
held by the complainant); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see
also Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <wwhustler.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent is using the <wwhustler.com> domain name to operate a website offering
links to online adult entertainment services to consumers for a fee which
directly compete with Complainant’s online adult entertainment services. Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark in order to profit from diverting
consumers from Complainant’s to Respondent’s website is not a use in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the disputed domain name pursuant to pursuant to
Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership
Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003)
(“Respondent's registration and use of the <gayaol.com> domain name with
the intent to divert Internet users to Respondent's website suggests that
Respondent has no rights to or legitimate interests in the disputed domain name
pursuant to Policy Paragraph 4(a)(ii).”).
Additionally, the record and WHOIS information indicates no evidence suggesting Respondent is commonly known by the <wwhustler.com> domain name. There is also no evidence in the record that Respondent is authorized to use Complainant’s mark. Thus, Respondent has not established rights or legitimate interests in the <wwhustler.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wwhustler.com> domain name, which is confusingly similar to Complainant’s HUSTLER mark, to divert Internet users to Respondent’s website that offers goods and services that compete with Complainant’s business. The Panel finds that such use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
In addition, Respondent is using the <wwhustler.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using Complainant’s HUSTLER mark to attract Internet users to a website that contains links for services which compete with Complainant’s business. This conduct is evidence that Respondent is attempting to profit by giving the impression of being affiliated with Complainant. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwhustler.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 10, 2008
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